General Cigar Co Inc v Partagas Y Cia SA

A disclaimer of an element of a registered trade mark affects the assessment of likelihood of confusion in both infringement proceedings and opposition or invalidity proceedings. Where the only similarity between the marks is the disclaimed element, that element cannot by itself support opposition or invalidity. Sections 5 and 10 of the Trade Marks Act 1994 pursue parallel purposes and require the disclaimer to be taken into account in assessing the scope of protection. The former practice under the Trade Marks Act 1938 does not control the construction of the 1994 Act.

General Cigar appealed from a decision of the Trade Marks Registry concerning a series of marks containing the word CIFUENTES. General Cigar relied on its earlier registered mark CIFUENTES WINKS, which carried a disclaimer of any exclusive right to CIFUENTES, and on a later application for CIFUENTES without a disclaimer. Partagas opposed the later application and sought registration of CIFUENTES and validation of its CIFUENTES label registration.

The Hearing Officer applied the approach in PACO/PACO LIFE IN COLOUR Trade Marks and held that the disclaimer prevented the disclaimed element from supporting the opposition where it was the only similarity. General Cigar challenged that approach. The central issue was whether section 13 of the Trade Marks Act 1994 limited a disclaimer to infringement matters or also made it relevant to opposition and invalidity.

1. The appeal was dismissed. The Hearing Officer was correct to apply the approach in PACO/PACO LIFE IN COLOUR Trade Marks.

2. Section 13 of the Trade Marks Act 1994 must be construed in the context of the parallel provisions in sections 5 and 10. Both provisions address likelihood of confusion and the scope of protection conferred by registration. It would be artificial to take a disclaimer into account for infringement but ignore it when considering whether a similar mark should be registered.

3. A disclaimer applies to part of a mark and operates by affecting the assessment of likelihood of confusion. It does not excise the disclaimed matter from the mark. The disclaimed element may be considered with other elements, but where it is the sole point of similarity it cannot support opposition or invalidity.

4. The distinction drawn under the 1938 Act between opposition and infringement did not determine the issue. The 1994 Act made new provision for trade marks, and the transitional provisions did not preserve the former interpretation of disclaimers. The legislative history and the Community trade mark practice did not support General Cigar’s construction.

5. The court accepted that parts of the reasoning in PACO/PACO LIFE IN COLOUR Trade Marks were open to criticism, including reliance on European material and The European Ltd v The Economist Newspaper Ltd. Nevertheless, its conclusion was consistent with the structure and purpose of the 1994 Act. Any unfairness caused by the transition from the 1938 Act could potentially be addressed by an application under section 64(5). The Hearing Officer’s issue-based costs order was left undisturbed because there was no cross-appeal.

• Trade Marks Registry: The Hearing Officer allowed General Cigar’s invalidity claim in relation to one mark but dismissed its opposition and made an issue-based costs order.
• High Court (Chancery Division): The appeal was dismissed. The Hearing Officer’s decision and costs discretion were upheld.